Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88224452

DATE:                                03/11/2019

NAME:                               gswift

NOTE:         

 

 

From: Gray, Jeffrey (IP) [mailto:Jeffrey.Gray@btlaw.com]
Sent: Monday, March 11, 2019 10:28 AM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: RE: RE: Trademark Application Serial No. 88224452—IMOD

 

Thank you for your below e-mail. As per my voice mail message, I am handling this application through a UK agent. It would therefore likely be some time while I report to the UK agent, they obtain instructions form the applicant and report back to me with instructions, and I can respond to you.

 

It may therefore be best if you issue an Action. Please let me know if you have any questions.

 

Jeff

Jeffrey R. Gray | Partner

BARNES & THORNBURG LLP | One North Wacker Drive, Suite 4400, Chicago, IL 60606-2833

Direct: 312-214-4807 | Main: 312-357-1313 | Fax: 312-759-5646 | jgray@btlaw.com

Atlanta | California | Chicago | Delaware | Indiana | Michigan | Minneapolis | Ohio | Texas | Washington, D.C.

 

From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Monday, March 11, 2019 7:22 AM
To: Trademarks - CH; Gray, Jeffrey (IP)
Cc: Swift, Gilbert M.
Subject: [EXTERNAL] RE: Trademark Application Serial No. 88224452—IMOD

 

RE: Trademark Application Serial No. 88224452—IMOD

 

Dear Jeffrey R. Gray, Esq.:

 

I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email. 

 

Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.

 

Requirement: Identification of Goods and Services

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The goods and services are: 

Class 010:             “Medical apparatus and instruments; medical apparatus and instruments for use in supplying gases; medical oxygen supply equipment; oxygen monitors, oxygen conservers and oxygen concentrators for medical use; apparatus for monitoring oxygen saturation in the blood; parts and fittings for all the aforesaid goods; regulators, valves and actuators for medical gas supply equipment and gas cylinders; oxygen masks and nasal cannulas”; and

               

Class 042:             “Research, design and development services relating to medical apparatus and instruments; technical support services relating to medical apparatus and instruments.”

               

The above bolded wording in the identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “equipment,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

For example, the wording “medical oxygen supply equipment” in the identification of goods is indefinite and needs clarification to specify the equipment by common commercial name, e.g. “oxygen masks for medical use” in Class 010 or “medical apparatus and instruments for use in surgery,” in Class 010.  TMEP §1402.01.

 

For example, the wording “regulators, valves and actuators for medical gas supply equipment and gas cylinders” in the identification of goods is indefinite and needs clarification to specify the equipment by common commercial name, e.g. “oxygen regulators” in Class 009 or “medical apparatus and instruments for use in surgery,” in Class 010.  TMEP §1402.01.

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 006:            Metal cylinders for compressed gas, sold empty

 

Class 009:            Medical apparatus and instruments, namely, nuclear medical research imaging apparatus

 

Class 010:             Medical apparatus and instruments, namely [please specify in Class 010 by common commercial name, e.g. medical radiation apparatus, medical imaging apparatus]; medical apparatus and instruments for use in supplying gases namely [please specify in Class 010 by common commercial name]; medical apparatus and instruments for use in surgery, namely, medical oxygen supply equipment; oxygen monitors, oxygen conservers and oxygen concentrators for medical use; monitors for oxygen saturation in the blood; structural parts and fittings for all the aforesaid goods; medical apparatus and instruments for use in surgery, namely, regulators, valves and actuators for medical gas supply equipment and gas cylinders; oxygen masks and nasal cannulas for medical purposes

 

Class 020:            Non-metal cylinders for compressed gas, sold empty

 

Class 037:            Technical support services, namely, technical advice related to the installation of medical apparatus and instruments

 

Class 042:             Product research, design and development services relating to medical apparatus and instruments; technical support services, namely, troubleshooting in the nature of diagnosing problems with medical apparatus and instruments

              

See TMEP §1402.01.

 

Advisories

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Multiclass Advisories

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)          List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)          Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least six classes; however, applicant submitted fees sufficient for only two classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Requirement: Explanation of the Mark’s Significance

 

To permit proper examination of the application, applicant must explain whether the letters in the mark “IMOD” have any significance in the medical trade or industry or as applied to applicant’s goods and services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

Please let me know how you wish to proceed. I thank you in advance for your prompt response.

 

Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028

 

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